Appeal No. 96-0974
Application 08/024,299
Lebby would appear to have the effect of rendering Kohno
unsuitable for operation in the intended manner. Compare In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984) ("if the French apparatus were turned upside down, it
would be rendered inoperable for its intended purpose"); In re
Schulpen, 390 F.2d 1009, 1013, 157 USPQ 52, 55 (CCPA 1968)
("Rather than being made obvious by the reference, such
modification would run counter to its teaching by rendering
the apparatus inoperative to produce the disclosed tire
patches.").
Furthermore, assuming arguendo that it would have been
obvious to combine the teaching so these references, the
rejection fails for failing to adequately explain how the
reference teachings are to be combined and how the limitations
of claim 5 can be read on the result, because the examiner has
addressed only five of the claim 3's twelve limitations.
Finally, for the same reasons as given above with respect
to claim 1, we agree with appellants that the examiner, by 10
reading appellants’ claim 3 on Lebby’s claim 1 instead of on
10Brief at 26.
- 17 -
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007